Ex Parte Morris

Patent Trial and Appeal Board

Apr 18, 2018

13235317 (P.T.A.B. Apr. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/235,317
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
09/16/2011
04/18/2018
FIRST NAMED INVENTOR
Eric L. Morris
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
DEFT-20061 6688
EXAMINER
KRUER,KEVINR
ART UNIT PAPER NUMBER
3649
MAILDATE DELIVERY MODE
04/18/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC L. MORRIS 1
Appeal2017-007915
Application 13/235,317
Technology Center 3600
Before DANIEL S. SONG, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner's final
rejection of claims 2--4, 6-14, 19--23, 45--47, and 49 in the present
application (App. Br. 1 ). We have jurisdiction under 35 U.S.C. §§ 6(b)
and 134.
We AFFIRM.
1 Referred to as "Appellant" herein. The real party in interest is PPG
Industries, Inc. (Appeal Brief (hereinafter "App. Br.") 1 ).
Appeal2017-007915
Application 13/235,317
The claimed invention is directed to an aqueous composition for
application to a metal substrate (Title; App. Br. 36, Claims App'x).
Independent claims 4 and 49 reads as follows (App. Br. 36, Claims App'x):
4. An aqueous composition for application to a metal
substrate, the composition comprising:
an aqueous earner;
one or more Group IA metal ions;
a hydroxide;
a phosphate ion selected from the group consisting of
pyrophosphate (P207)4-, phosphate (P04)3-, and polyphosphate;
and
polyvinylpyrrolidone.
49. A coated substrate comprising:
a coating comprising a conversion coating composition
comprising an aqueous carrier; one or more Group IA metal ions,
wherein at least one of the Group IA metal ions is a lithium ion;
a hydroxide; and a phosphate.
REJECTIONS
The Examiner rejects various claims under 35 U.S.C. § 103(a) as
follows:
1. Claims 2--4, 6-11, 13, 14, 20-22, 45--47, and 49 as obvious
over Dollman et al. (US 4,762,638, iss. Aug. 9, 1988 (hereinafter
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"Dolhnan") in view of Cermenati et al. (US 2009/0062175 Al, publ. Mar. 5,
2 009 (hereinafter "Cennenati ")).
2. Claim 12 as obvious over Dollman, Cermenati, and in view of
Hino et al. (US 2007/0184997 Al, publ. Aug. 9, 2007 (hereinafter "Hino")).
3. Claim 19 as obvious over Dollman, Cermenati, and in view of
Shinichi et al. (GB Patent No. 2148942 A, publ. Jun. 5, 1985 (hereinafter
"Shinichi") ).
4. Claims 2--4, 6-8, 10-14, 20-23, 45--47, and 492 as obvious over
Hino, Dollman, and Cermenati.
5. Claim 19 as obvious over Hino, Dollman, Cermenati, and
Shinichi.
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010)
(precedential).
Rejection 1
The Examiner rejects claims 2--4, 6-11, 13, 14, 20-22, 45--47, and 49
as obvious over Dollman in view of Cermenati, finding that Dollman
2 The Examiner includes claim 44 in this rejection (Final Act. 6), but claim
44 has been previously canceled (App. Br. 24; id. at Claims App'x 4).
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discloses the aqueous composition claimed, except for the recited
polyvinylpyrrolidone (hereinafter "PVP") (Final Act. 2-5). The Examiner
relies on Cermenati for disclosing a composition that comprises PVP "to
increase the hydrophilicity ([i-f] 0093) and soil resistance of the surface
([i-f] 0086)." (Final Act. 5). The Examiner concludes that "it would have
been obvious to one of ordinary skill in the art at the time the invention was
made to add PVP to the composition of D[ o ]llman in order to provide
increased soil resistance and hydrophilicity to the cleaned aluminum
substrate." (Final Act. 5).
Non-analogous Art
The Appellant argues that the Examiner has failed to set forth a proper
prima facie case of obviousness because Dollman and Cermenati are non-
analogous art, and involve the field of cleaning compositions (App. Br. 8-9).
The Appellant argues:
Neither reference is within Appellant's field of pretreatment or
conversion treatments, or coatings formed therefrom. Appellant
defined a pretreatment or conversion treatment to be "a treatment
for a metal substrate that causes the metal surface to be converted
to a different material." Application as filed, page 8, lines 28-30
(emphasis added). According to Appellant, "[a Jn aqueous
solution having a metal element in contact with a metal substrate
of a different element, where the substrate dissolves, leading to
precipitation of a coating ... is also within the meaning of the
terms 'conversion coating' and 'conversion treatment."'
(App. Br. 9).
According to the Appellant, both Dollman and Cermenati "are not
conversion coatings because they do not convert the substrate surface to a
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different material," and Dollman "does not lead to precipitation of a
coating," and instead, distinguishes its composition from a conversion
coating (App. Br. 9).
The Appellant's arguments are not persuasive. We agree with the
Examiner (Ans. 12) that the Appellant's arguments are not commensurate
with the scope of the claims, which, except for claim 49, do not recite
"conversion treatments," "conversion coating," "precipitation of a coating,"
etc., but instead, are simply directed to an "aqueous composition." As the
Examiner explains:
with regards to all claims but claim 49[,] the appealed claims do
not require a "conversion" or "pretreatment" coating. Rather, the
claims more broadly are directed to "aqueous compositions."
Thus, appellant's argument is not commensurate in scope with
the pending claims. There is no dispute in the appealed
application that the compositions of the cited art (D[ o ]llman and
Cermenati) are aqueous compositions.
(Ans. 11; see also id. at 12-13 ("Appellant does not dispute D[o]llman
teaches an aqueous composition.")). 3
Instead of amending the claims, the Appellant argues that under the
broadest reasonable interpretation, the prior art relied upon are not within the
same field of endeavor (Reply Br. 3), and that:
the broadest reasonable interpretation of the claim term "aqueous
composition" is a "conversion composition" and not any aqueous
composition. The only meaning that is consistent with the use of
3 In addition, while unnecessary to reach this Decision, in view of the
Appellant's assertion that the "Appellant's field [is] pretreatment or
conversion treatments, or coatings formed therefrom" (App. Br. 9), it is not
apparent why aqueous cleaning composition of Dollman is not in the field of
"pretreatment." (See Dollman, col. 1, 11. 24--28; see also Ans. 13).
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the claim term in the specification of the pending application is
that the aqueous compositions are "'conversion compositions."
(Reply Br. 2).
In that regard, the Appellant argues that "Appellant's specification
expressly distinguishes the compositions recited in the pending claims from
cleaning compositions." (Reply Br. 2, citing Spec. i-f 62; see also
App. Br. 10).
The two separate tests for determining whether a prior art reference is
analogous are as follows: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed; and (2) if the reference is not
within the inventor's endeavor, whether the reference is reasonably pertinent
to the particular problem with which the inventor is involved. In re Bigio,
381F.3d1320, 1325 (Fed. Cir. 2004). The field of endeavor can be
determined "by consulting the structure and function of the claimed
invention as perceived by one of ordinary skill in the art" with "reference to
explanations of the invention's subject matter in the patent application." Id.
at 1325-26 (emphasis added); see also id. at 1325 (field of endeavor
determined "by reference to explanations of the invention's subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention" (emphasis added)). In addition, a way to demonstrate
that a reference is analogous through the same field of endeavor prong is by
showing that the reference describes something that is similar to that
claimed. Id.
Therefore, the determination of the inventor's field of endeavor is
firmly grounded on the invention that is claimed, and is not simply based on
what the inventor intended the field to be. This grounding on the invention
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claimed is further evidenced in the general patent law pertaining to
obviousness to which analogousness is pertinent. See In re Self, 671 F .2d
1344, 1350-51(CCPA1982) (non-analogous art not pertinent to
anticipation). In that regard, "[i]n determining whether the subject matter of
a patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective reach of the
claim." KSR Int'! v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (emphasis
added); see also In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
("[T]he name of the game is the claim.").
As to claim 49, which specifically recites a conversion coating
composition, we further observe that the Examiner finds that "even if the
term 'conversion composition' is read into the claims, Dollman's coating
reads on Appellant's definition of 'conversion' coating." (Ans. 13). In that
regard, the Examiner explains that:
Appellant defines a "conversion" coating ([Spec.] page 9, lines
9+) to include "an application or treatment for a metal surface
where a metal substrate is contacted with an aqueous solution
having a metal that is a different element than the metal
contained in the substrate." Since Dollman's coating
composition includes lithium metal and is designed to be applied
to aluminum substrates, the examiner maintains the position that
Dollman's composition reads on a "conversion" coating.
(Ans. 12).4
4 The cited portion of the Specification states:
The term "conversion coating", also referred to as a
"conversion treatment" or "pretreatment" means a
treatment for a metal substrate that causes the metal
surface to be converted to a different material. The
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We agree with the Examiner in that the Appellant has chosen to define
"conversion coating" very broadly so as to encompass the composition of
Dollman. Moreover, we further observe that claim 49 is rejected based on
the combination of Dollman and Cermenati. As the Appellant acknowledges
(App. Br. 13), Cermenati discloses that copolymer of vinylpyrrolidone "is
adsorbed to the hard-surface from the liquid composition comprising it in
such a manner as to increase the hydrophilicity of the surface." (Cermenati
i-f 93). Accordingly, we fail to see how the combination of Dollman and
Cermenati that includes PVP would not be considered a "conversion
treatment" or "conversion coating" as broadly defined by the Appellant.
The Appellant's remaining argument that "neither Dollman nor
Cermenati is reasonably pertinent to the particular problem with which
Appellant was involved" (App. Br. 10; see also Reply Br. 4) is immaterial
because Dollman and Cermenati are within the Appellant's field of endeavor
for the reasons discussed supra.
meaning of the terms "conversion treatment" and
"conversion coating" also include an application or
treatment for a metal swface where a metal substrate is
contacted with an aqueous solution having a metal that is
a different element than the metal contained in the
substrate. An aqueous solution having a metal element in
contact with a metal substrate of a different element,
where the substrate dissolves, leading to precipitation of a
coating (optionally using an external driving force to
deposit the coating on the metal substrate), is also within
the meaning of the terms "conversion coating" and
"conversion treatment".
(Spec. 9, 11. 9--18, emphasis added).
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Motivation to Combine
The Appellant further argues that there is no suggestion or motivation
to modify Dollman to include PVP taught by Cermenati because "Dollman's
cleaning composition is intended to be rinsed from the substrate surface,
while the composition taught by Cermenati is intended to adsorb to the
substrate surface." (App. Br. 13, citing Dollman, col. 6, 11. 7-8; Cermenati
ii 93).
However, we agree with the Examiner that "contrary to [A]ppellant's
assertion, Cermenati (like D[ o ]llman) teaches the cleaning composition
should be rinsed after application ([if] 017 6). While the vinylpyrrolidone is
expected to remain after rinsing, there is nothing in either reference that
suggests the teachings therein are not compatible." (Ans. 14). Indeed, both
compositions are disclosed as being cleaning compositions, and Cermenati
discloses that cleaners can do more than simply clean surfaces (Cermenati
if 93 (PVP "is adsorbed to the hard-surface ... in such a manner as to
increase the hydrophilicity of the surface.")).
The Appellant further argues that a person of ordinary skill would not
combine the alkaline composition of Dollman with the acidic composition of
Cermenati (App. Br. 13), and "would not look to the teachings of
polyvinylpyrrolidone in an acidic composition to be a teaching with respect
to polyvinylpyrrolidone in an alkaline composition." (App. Br. 14).
However, as the Examiner explains:
The examiner is not
combining an alkaline
cleaning composition.
proposing (as argued by applicant)
cleaning composition with an acidic
Rather, the examiner is proposing
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utilizing a single component from the cleaning compos1t10n
disclosed in Cermenati in order to obtain art recognized benefits
in the cleaning composition of D[ o ]llman. . . . To the contrary,
the skilled artisan would know the benefits of PVP in cleaning
compositions is not dependent upon the pH of the solution.
(Final Act. 11; see also Ans. 14--15).
The Appellant also argues that a person of ordinary skill in the art
would appreciate that the free electron pairs of the nitrogen in the
polyvinylpyrrolidone would be affected differently by the
hydrogen or hydroxide ions of an acidic or alkaline composition,
respectively, and therefore would not look to the teachings of
polyvinylpyrrolidone in an acidic composition to be a teaching
with respect to polyvinylpyrrolidone in an alkaline composition.
(App. Br. 13-14).
However, we agree with the Examiner that the Appellant's argument
is not substantiated with any evidence, and that "no evidence of record
support counsel's comments with regards to the free electron pair of the PVP
nitrogen." (Ans. 15). Indeed, the Appellant does not provide a persuasive
rebuttal to the Examiner's finding that "[t]o the contrary, the skilled artisan
would have known the benefits of PVP in cleaning compositions is not
dependent upon the pH of the solution." (Ans. 15, citing US 3,979,339 and
US 7,264,678 as rebutting Appellant's argument).
Predictable Results
The Appellant further argues that the Examiner has not articulated that
there was a reasonable expectation of success (App. Br. 14). However, the
Examiner stated that "the proposed combination teaches adding a known
additive (PVP) with a known benefit and which is known to be useful in
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acidic or basic cleaning compositions to Dollman's cleaning composition in
order to obtain a predictable result." (Final Act. 12; see also Ans. 16).
The Appellant argues that the Examiner's position as to predictable
results is conclusory (App. Br. 15). However, as noted above, the
Examiner's finding that "the benefits of PVP in cleaning compositions is not
dependent upon the pH of the solution" (Ans. 15) is not disputed, and the
Appellant does not provide any persuasive evidence or arguments as to why
addition of PVP into Dollman would not provide predictable results.
New and Unexpected Results
The Appellant argues that the Examiner "failed to consider
Appellant's unexpected discovery that the aqueous composition recited in
independent Claims 4, 45 and 49 exhibits good adhesion to the metal
substrate." (App. Br. 16-17, citing Spec. pg. 20, 11. 10-11; Table 4; see also
Reply Br. 4--5, also citing Spec. pg. 20, 1. 20, pg. 21, 11. 10-11).
However, we agree with the Examiner that the purported discovery is
"not commensurate in scope with the pending claims," and is unpersuasive
as it "does not compare the closest prior art to the claimed invention." (Final
Act. 12-13). The purported discovery does not even establish new and
unexpected results. Specifically, the cited portions of the Specification
merely states "[t]he coatings according to Formula II [and IV] exhibit good
adhesion to the metal substrate." (Spec. pg. 20, 11. 10-11, pg. 21, 11. 10-11).
The cited Table 4 is titled "Summary of Paint Adhesion for Various
Conversion Coated Li· P Coatings Rated Per Boeing P. S. 21313." (Spec.
32-33). Thus, the Appellant's assertion is based on a single line in the
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Specification that does not even imply something unexpected was
discovered, and the raw data recording test results of different panels with
different coatings. There is no analysis as to what would have been expected
and how the results differ from that expectation so as to demonstrate
attainment of unexpected results. See In re De Blauwe, 736 F.2d 699, 705
(Fed.Cir. 1984) ("[U]nexpected results must be established by factual
evidence. Mere argument or conclusory statements in the specification does
not suffice").
Therefore, in view of the above considerations, we affirm the
Examiner's rejection as to independent claims 4, 45, and 49. The Appellant
relies on dependency and alleged deficiencies of the combination of
Dollman and Cermenati for patentability of dependent claims 2, 3, 6-11, 13,
14, 20-22, 46, and 47 (App. Br. 17-18). Accordingly, we affirm the
Examiner's rejection of these claims as well.
Rejection 2
The Examiner rejects claim 12 as obvious over Dollman, Cermenati,
and Hino, finding the combination of Dollman and Cermenati discloses the
claimed aqueous composition, except for the organic phosphate source
compound (Final Act. 5). The Examiner relies on Hino for disclosing a
composition "wherein the alkali metal source is an organic phosphate source
([i-f] 0023)," and concludes that the composition of claim 12 would have
been obvious to one of ordinary skill in view of Hino 's teaching that "such
compounds are useful as alkali metal sources for cleaning compositions."
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(Final Act. 5-6).
The Appellant relies on dependency on claim 4, and unpersuasive
arguments addressed supra, in support of patentability (App. Br. 19-22).
Accordingly, we also affirm Rejection 2.
Rejection 3
The Examiner rejects independent claim 19 as obvious over Dollman,
Cermenati, and Shinichi, finding the combination of Dollman and Cermenati
discloses the claimed composition, except for the fluoride anion (Final
Act. 6). The Examiner relies on Shinichi for disclosing a composition
"wherein the fluoride is added to improve the cleaning effect of the
composition (page 1, lines 35+ ),"and concludes that the recited composition
of claim 19 would have been obvious to one of ordinary skill in the art "in
order to improve the cleaning effect of the composition." (Final Act. 6).
The Appellant relies on dependency on claim 4, and unpersuasive
arguments addressed supra, in support of patentability (App. Br. 23). The
Appellant also argues that:
Dollman specifically teaches away from the use of fluoride in
cleaning solutions. For example, in the "Background of the
Invention," Dollman teaches that "hydrofluoric acid and
fluorides present in spent cleaning baths and rinse water present
an environmental problem in their disposition." Dollman, 1 :39-
41 (emphasis added).
(App. Br. 23).
However, as the Examiner finds, while Dollman "acknowledges the
environmental issues, D[ o ]llman also acknowledges fluoride containing
cleaning composition are highly effective and commonly used
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commercially." (Final Act. 14). We agree with the Examiner's finding and
conclusion that:
Shinichi specifically teaches benefits of utilizing the fluoride
anion. Since said anions have known benefits and are readily
used in commercially available cleaning compositions, the
examiner maintained the proposed combination does not
contradict the teachings as a whole of D[ o ]llman.
(Ans. 22).
While indicating disadvantage in disposition, the evidence indicates
that fluorides are nonetheless used in the art. Accordingly, this disadvantage
has been demonstrated to be not a compelling disadvantage so as to obviate
the motivation to combine the references in the manner suggested by the
Examiner. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.
Cir. 2006) ("[A] given course of action often has simultaneous advantages
and disadvantages, and this does not necessarily obviate motivation to
combine."). Accordingly, we affirm Rejection 3.
Rejection 4
The Examiner rejects claims 2--4, 6-8, 10-14, 20-23, 45--47, and 49
as obvious over Hino, Dollman, and Cermenati, finding that Hino discloses
the claimed composition, except for selection of lithium as the alkali metal
(Final Act. 6-7). The Examiner relies on Dollman for this limitation, and
concludes that it would have been obvious to one of ordinary skill in the art
to have utilized lithium for the alkali metal of Hino, and that "[t]he
motivation for doing so would have been that D[ o ]llman teaches such alkali
metal are functionally equivalent in alkali cleaning compositions." (Final
Act. 7).
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The Appellant proffers substantially the same arguments as proffered
relative to Rejection 1 (App. Br. 26-31 ), including that Hino is also non-
analogous art because it is directed to a cleaning composition (App. Br. 26-
28). However, these arguments are unpersuasive for substantially the same
reasons discussed supra relative to Rejection 1.
Rejection 5
The issues and arguments presented relative to this rejection of
claim 19 are substantially the same as those in Rejection 3. Therefore,
Rejection 5 is affirmed for substantially the same reasons as Rejection 3.
CONCLUSION
The Examiner's rejection of claims 2--4, 6-14, 19-23, 45--4 7, and 49
is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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